Thursday, October 10, 2013

TTAB Affirms Refusal to Register Bicycle Enclosure Shape Due to Lack of Distinctiveness

The Board affirmed a refusal to register the trade dress configuration shown below, for advertising services provided via bike enclosures, on the ground that the design is nondistinctive. Since applicant did not claim acquired distinctiveness, that was the end of the story. In re Portland Pedal Power, LLC, Serial No. 85396037 (September 10, 2013) [not precedential].

The applied-for mark was described as an enclosure wrapped around the frame of a bicycle, and having convex sides (see specimen of use below). Examining Attorney Jaclyn Kidwell Walker maintained that the configuration comprises non-distinctive trade dress that would be perceived only as decoration or ornamentation.The solitary issue on appeal was whether the design or configuration is inherently distinctive.

The Board, as usual, applied the CCPA's four-factor Seabrook test to determine whether the trade dress is inherently distinctive (the fourth factor being inapplicable here):

In determining whether a design is arbitrary or distinctive [the CCPA] has looked to [1] whether it was a “common” basic shape or design, [2] whether it was unique or unusual in a particular field, [3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or [4] whether it was capable of creating a commercial impression distinct from the accompanying words

The Examining Attorney, relying on various photographs of bicycle enclosures used for advertising, contended that the applied-for mark is a common shape.

The photographic evidence showed bicycle enclosures that varied in appearance [one example directly above], but all were attached to the backs of bicycles and include large areas for advertisements. Applicant argued that its design includes features that differ from the designs in evidence: it has convex side panels, a rectilinear top panel, and unusually shaped front and back panels. However, rectilinear top and bottom panels are found in the third-party designs, and in two of them the bottom panel is wider than the top (like applicant's design).

Applicant submitted the declaration of its principal, who was also the designer of the enclosure. He stated that the design was created independently and that the cost of manufacture is many times that of a design with straight sides. Irrelevant, said the Board.

The Board found that the primary difference between applicant's design and the other enclosures resided in its convex shape. Was that enough to establish that the design would immediately be perceived as a service mark? No, said the Board.

[C[onsumers are familiar with bicycle enclosures that have different shapes. Applicant’s enclosure’s convex sides merely are rounded like a sphere as opposed to being inwardly rounded like a bowl or flat as are the sides in the other enclosures. Thus, the evidence of record establishes that the applied-for mark is not an uncommon shape for bicycle enclosures on which advertisements are placed.

The Board concluded that the applied-for design is not inherently distinctive, and since applicant made no attempt to prove acquired distinctiveness, the Board affirmed the refusal to register.

The alternative would have been to amend to the Supplemental Register "in the alternative" ... applicant does not appear to have asserted this position even though the Examiner offered to accept the application on the Supplemental Register.